Provisional prohibition

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Chapter 1. Conditions of Prohibition

Section 1.1. Principle

In order to request, in summary or on request (L615-3 CPIparagraph (3), an interim measure, it must be shown (L615-3 CPI, paragraph 1):

  • the likelihood infringement of patent rights or
  • theimminence of this attack.

Section 1.2. Application or referred

For a prohibition to be pronounced on application (ie without contradictory), it is necessary that the urgency be such that a contradictory is not possible. In particular, it makes balance between the following elements (C. Cass. com. n ° 13-10189, September 16th, 2014):

  • the absence of doubt as to the infringement;
  • the fact that a possible counterfeit can be repaired by damages;
  • the urgency is such that a referral from hour to hour is not possible.

Section 1.3. Accuracy on the likelihood

The plausibility does not concern the validity of the patent (which falls within the competence of the judges of the merits), but only the infringement of the patent (Court of Appeal of Paris, pole 1, 2nd chapter, March 21st, 2012).

Only the manifest nullity of the patent can make the imminent infringement of those rights unlikely (Court of Appeal of Paris, pole 1, 2nd chapter, March 21st, 2012).

This manifest nullity may possibly be analyzed by the pre-trial judge (if he is competent, ie if the provisional ban is requested after his appointment, 771 CPC) (District Court of Paris, 3rd c., 2nd sect., Order of the judge of the pre-trial, March 7, 2014).

Section 1.4. Clarification on the imminence of the infringement

The fact that a foreign company producing counterfeit goods is present at a fair can demonstrate the willingness of this company to introduce the products in France and thus justify provisional measures of prohibition (Paris District Court, order of the pre-trial judge, July 8, 2009).

The fact of obtaining a MA does not show any imminence of the infringement, only the obtaining of a price by the CEPS and its publication in the OJ demonstrates an imminent character (Court of Appeal of Paris, Pole 1, 2nd chapter, May 23, 2013).

Section 1.5. "Short delay" ?

It is questionable whether the prohibition must be presented to "short delay"From the day on which the patentee became aware of the facts in dispute.

If this requirement is standard in the field of interim measures (C. Cass. com. No. 92-14361, March 1, 1994), however, it seems that the legislator did not wish to add such a condition for applications for provisional prohibition: indeed, the terminology "short delay"Has been removed from the article L615-3 CPI when it was amended on 30 October 2007.

Section 1.6. Patent / patent application?

1.6.1. French patent

Article L615-3 CPI provides that any person "having standing to bring infringement"May request a temporary injunction.

Therefore, as the owner of a French patent can act in infringement (L615-2 CPI), it is possible, on this basis, to apply for a temporary injunction.

1.6.2. French patent application

It is unclear whether a provisional injunction can be sought on the basis of a patent application.

In all rigor, the article L615-4 CPI, paragraph 5, providing that an action for infringement may be initiated on the basis of a patent application, such an application should be allowed (L615-3 CPI).

1.6.3. European patent

Article L615-3 CPI provides that any person "having standing to bring infringement"May request a temporary injunction.

Therefore, since the holder of a European patent can act in infringement (L615-2 CPI together A64 (1) EPC), it is possible, on this basis, to apply for a temporary injunction.

1.6.4. European patent application

A priori, a European patent application can not be used as a basis for an application for a provisional ban, the article L614-9 CPI not mentioning the article L615-3 CPI (Court of Appeal of Paris, ch. December 14, 1997).

This omission of the article L614-9 CPI seems still questionable because theA66 CBE specifies that "The European patent application [...] has, in the designated Contracting States, the value of a regular national filing” .

Therefore, if one recognizes the right to apply for a provisional ban on the basis of a French application, it would seem illogical to refuse it for a European patent application.

Chapter 2. Competent Judge

If the competence of the judge hearing the application for interim measures does not seem to be a problem, we may ask ourselves whether the pre-trial judge may impose interim measures of prohibition ...

To the visa of the article 771 of the Code of Civil Procedure, the decision of the Court of Appeal of Paris, Pole 5, 1st ch., November 3rd, 2015, RG n ° 2013/14310 answer it in the affirmative.

Chapter 3. Moment of Application for Provisional Prohibition

This prohibition may be pronounced, possibly under penalty, before or during the proceedings (L615-3 CPIparagraph 4).

Chapter 4. Warranty / Provision

Section 4.1. Principle

It is customary for the judge to ask for a security (usually a bank guarantee) in order to compensate the alleged infringer if he has been imposed an interim measure, ultimately unjustified (L615-3 CPIparagraph 2).

The judge may also ask the alleged infringer to make a provision in the event of his conviction (if it is probable, L615-3 CPIparagraph 3).

Section 4.2. Liability without fault / for fault?

Compensation for the alleged infringer does not necessarily presuppose fault by the plaintiff to the prohibition: execution of the prohibition faultless liability the applicant (L111-10 CPCE) (Court of Appeal of Paris, Pole 5, 2nd chapter, January 31, 2014).

It is possible to cumulate this responsibility without fail with a fault liability on the basis of the article 1240 of the Civil Code (eg delaying tactics or intent to harm) (Court of Appeal of Paris, Pole 5, 2nd chapter, January 31, 2014).

Chapter 5. Action on the merits

Section 5.1. Principle and delay

If an action on the bottom is already in progress, there is no difficulty.

Otherwise, it will be necessary to bring an action on the merits within a 20 days working or 31 days civilians (L615-3 CPI, paragraph 5 together R615-1 CPI).

This action may be civil or criminal or consist of filing a complaint with the prosecutor (L615-3 CPIparagraph 5).

Section 5.2. Starting point of the deadline

The starting point of the delay is normally "from the date of the order” (R615-1 CPI).

Nevertheless, it must be understood that the period runs from the date of the order only if (Court of Appeal of Paris, Pole 1, 2nd ch., March 26, 2015, RG: 14/12790):

  • the judge has notified the parties of the date on which the order will be made and
  • that notice is mentioned in the decision.

If it is not mentioned in the order, the starting date of the time limit shall be deferred on the date of notification of the order, or, in the absence of notification, on the date on which the party concerned had means, effective knowledge of this decision (Court of Appeal of Paris, Pole 1, 2nd ch., March 26, 2015, RG: 14/12790).

Section 5.3. Sanction

Otherwise, all ordered measures are void and damages may be awarded to the injured party (see above, L615-3 CPIparagraph 5).

Chapter 6. Serious Challenges That Can Counter Demand

Defendants may submit certain elements to block the application for provisional prohibition:

Chapter 7. Remedies

The order ordering these provisional measures may be appealed by both parties to the Paris Court of Appeal (490 CPC (referred) and 496 CPC (request)).

The appeal is not suspensive in respect of provisional execution (539 CPC).

Chapter 8. Request for suspension of prohibition

It is possible to request the suspension of provisional measures of prohibition by application of Article 524 CPC paragraph 2 (Court of Appeal of Paris, ch. 01, sect. P, interim order, 21 September 2001).

One Comment:

  1. Hello,

    With reference to Section 6 (entitled "Appeals"), it appears that "from a procedural point of view, the interim withdrawal (496 CPC) is not a
    remedy within the meaning of the Code civil procedure "[...]" The request for withdrawal is not a remedy, it is not subject to any delay ".

    Source: Retraction from an Order on Request, Nicolas Lisimachio and Alice Bon, The Legal Week, General Edition N ° 14 (available on http://www.brunswick.fr)

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